DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on June 25, 2025 has been entered.
Status of the Claims
Claims 1-12 are currently pending. Claims 7-12 are withdrawn. Claims 1-6 are rejected.
Response to Amendment/Arguments
The Amendment filed June 25, 2025 is compliant with the requirements of 37 CFR 1.121(c), accordingly the amendment has been entered. Applicant’s remarks filed on June 25, 2025 have been fully considered and are addressed below:
35 USC § 102 Rejection
The anticipation rejection of claims 1-6 over Kishore et al. J. Het. Chem. 1978, 15, 1335-1338, based on compounds of the structure
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, has been overcome by the amendments to Formula 1,
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, excluding tetrazolyl substituted with phenyl from R1. The rejection has been withdrawn.
Scope Searched
Examination of the elected invention was conducted in accordance with the MPEP 803.02. Examination of the Markush-type claims has been extended, as necessitated by amendment, to determine the patentability of Formula (I)
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, wherein:
R1 is tetrazolyl, phenyl linked by O (the phenyl being substituted by alkoxy of phenoxy) or benzodioxolyl linked by O (the benzodioxolyl being substituted by halogen, alkoxy, phenyl, or phenoxy).
These compounds were found allowable over the prior art. The search was extended to:
R1 is phenyl linked by O (the phenyl being unsubstituted) and R2 is unsubstituted phenyl,
and
R1 is piperazinyl and R2 is substituted phenyl.
These compounds are not allowable over the prior art. Since prior art was found, claims 7-12 remain withdrawn from further consideration pursuant to 37 CFR 1.142(b) as being drawn to a nonelected invention, there being no allowable generic or linking claim.
Claim Rejections - 35 USC § 112(b)
The following is a quotation of 35 U.S.C. 112(b):
(B) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
Claim 3 is rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly
point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 3 recites the limitation “the tetrazolyl linked by O in R1”, which lacks antecedent basis in the claim. Claim 3 depends from claim 1, which circumscribes the scope of R1 being “tetrazolyl, piperazinyl, morpholinyl, phenyl linked by O, or benzodioxolyl linked by O.” The R1 group does not include “tetrazolyl linked by O in R1”, as referenced by claim 3. Therefore, the reference to “the tetrazolyl linked by O in R1” in claim 3 is unclear.
This rejection may be overcome by deleting “linked by O” from the limitation “the tetrazolyl linked by O in R1.”
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(1 of 2) Claims 1-2, 4 and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Chemical Abstract Service (CAS) Registry No. 13909-96-1, STN Database (Entered: Nov. 16, 1984).
CAS teaches the compound
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, which has the same
structure of instant Formula 1,
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, wherein R1 is (unsubstituted) phenyl linked by O, R2 is (unsubstituted) phenyl, R3 is H, and R4 is H.
(2 of 2) Claims 1 and 3-6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Verderame, M. J. Med. Chem. 1966, 9, 153-154.
Verderame teaches the compound
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, wherein Ar is phenyl and X is CH2CONHCONHC6H4OC2H5-p. See Table II compound 5. Verderame’s compound 5,
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, has the same structure of instant Formula 1,
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, wherein R1 is piperazinyl monosubstituted with phenyl, R2 is phenyl substituted with C2 alkoxy, R3 is H, and R4 is H.
Regarding claim 3, the claim is interpreted as including piperazinyl for R1, since the claim does not specify what R1 must be. Rather, it limits which tetrazolyl, benzodioxolyl and phenyl groups are encompassed by R1, without requiring that R1 must be one of these groups.
Allowable Subject Matter
The compounds of Formula (I)
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, wherein: R1 is tetrazolyl, phenyl
linked by O (the phenyl being substituted by alkoxy of phenoxy) or benzodioxolyl linked by O (the benzodioxolyl being substituted by halogen, alkoxy, phenyl, or phenoxy) are allowable over the prior art.
Contact Information
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AMANDA L AGUIRRE whose telephone number is (571)272-5592. The examiner can normally be reached 10 am-6 pm EDT.
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/AMANDA L. AGUIRRE/ Primary Examiner, Art Unit 1626
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